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Is it possible to use Claim interpretation under 112 sixth paragraph (35 USC 112 (f)) only for patent invalidation without using 112 second paragraph (35 USC 112 (b))?

  • “(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.“ how would you not use that? – DonQuiKong Feb 25 at 10:03
  • We have to use that. 112(f) MPF limitations invokes rejections like 112(a) or 112(b). – Rakesh_Sharma Feb 25 at 10:14
  • Please quote the passage you are asking about in your question. – Eric Shain Feb 25 at 14:24
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My answer is a no as per MPEP the claims even MPF must also satisfy the requirement of disclosure i.e., 112(a).

MPEP 2103.I.C which states

"Examiners should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter."

"Examiners should then correlate each claim limitation to all portions of the disclosure that describe the claim limitation. This is to be done in all cases, regardless of whether the claimed invention is defined using means- (or step-) plus- function language. The correlation step will ensure that examiners correctly interpret each claim limitation in light of the specification"

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